United States District Court, D. Minnesota
Courtland C. Merrill, Daniel R. Hall, Joseph W. Anthony, Cory
D. Olson, Steven C. Kerbaugh, and Steven M. Pincus, Anthony
Ostlund Baer & Louwagie P.A., for Plaintiff.
G. Carlson, Jonathan D. Carpenter, Peter Kohlhepp, Tara C.
Norgard, Carlson Caspers Vandenburgh Lindquist & Schuman
P.A., Joseph P. Reid, Patrick J. McKeever, Thomas N.
Millikan, Perkins Coie LLP, and Laura J. Borst, Norton Rose
Fulbright U.S. LLP, for Defendants.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON United States District Judge.
matter comes before the Court on the
parties' cross-objections to Magistrate Judge
Franklin L. Noel's October 5, 2016 order [Doc. No. 634]
(“October 5 Order”) granting, in relevant part,
Defendants' motion to compel compliance with an earlier
order of the same judge, issued May 18, 2016 [Doc. No. 556]
(“May 18 Order”). Luminara objects to the October
5 Order on the ground that its interpretation of the scope of
the waiver of attorney-client privilege triggered by the
testimony of a non-reporting expert witness is overly broad.
(See Pl.'s Obj. [Doc. No. 658] at 3.) In
contrast, Defendants agree with Judge Noel's
scope-of-waiver ruling, but object to his decision to grant
Luminara an additional twenty-one day period in which to
decide whether to accept disclosure of privileged
communications or withdraw its non-reporting expert and
maintain the privilege. (See Defs.' Obj. [Doc.
No. 659] at 2.) After careful review of the parties'
briefing, relevant case law, and Magistrate Judge Noel's
rulings, the Court overrules both objections and affirms the
October 5, 2016 Order, subject to such modification as is
heart of this dispute is Luminara's decision to designate
Doug Patton as a non-reporting, testifying expert witness
pursuant to Rule 26(a)(2)(C) of the Federal Rules of Civil
Procedure. (See Reid Decl. [Doc. No. 439], Ex. F.)
Patton is a named inventor on five of the asserted patents
underlying this action, and is one of the founding members of
Luminara's predecessor-in-interest, Candella, LLC.
(Pl.'s Obj. at 4.) He is also a paid consultant to
Luminara, providing expertise ranging from design and
development of new products to development of patent
first identified Patton as an individual “likely to
have discoverable information” on December 31, 2014, in
its Rule 26(a)(1)(A) disclosure. (See Reid Decl.,
Ex. C at 3.) Defendants responded by serving Patton with a
document subpoena on January 23, 2015, and deposing Patton as
a fact witness on October 29, 2015. (Defs.' Obj. at 3.)
At the time, Luminara objected to every one of
Defendants' document requests on privilege grounds, and
repeatedly instructed Patton not to answer certain questions
during his deposition. (Id.; Reid Decl., Ex. D.)
February 1, 2016, Luminara filed its Rule 26(a)(2)(C)
disclosure, identifying Patton as a proposed non-reporting
expert witness. (Reid Decl., Ex. F at 3.) Luminara indicated
may provide testimony based on factual knowledge as well as
testimony based on knowledge, skill, experience, training or
education. Mr. Patton is expected to provide testimony at
trial on the issues that he addressed at his deposition [and
in] his declaration, including that Liown's moving flame
candles infringe the licensed Disney patents, that
embodiments described in Liown's '986 and '137
patents if made or sold in the U.S. would infringe the
license[d] Disney patents, that the [sic] differences between
the inventions claimed in the Disney patents-in-suit and
flameless candles described in Disney's earlier-filed
'455 patent, and Disney's and Candella's
development of a flameless candle before Mike Li alleges he
developed a flameless candle.
(Id.) (internal citation omitted). On the basis of
this disclosure, Defendants moved the magistrate judge to
require Patton to submit an expert report pursuant to Rule
26(a)(2)(B). (See generally Def.'s Mem. [Doc.
No. 374].) The court rejected this request, finding that
because Patton was not specially retained to provide expert
testimony, but rather would testify on the basis of
percipient knowledge, he was not subject to Rule 26(a)(2)(B).
(February 25 Order [Doc. No. 388] at 6.)
then moved for an order overruling Patton's privilege
objections to his earlier discovery responses. (See
Mot. to Strike [Doc. No. 436].) According to Defendants, by
putting Patton forward as a non-reporting expert witness
under Rule 26(a)(2)(C), Luminara waived the attorney-client
privilege with regard to materials and communications
provided to Patton in connection with his testimony.
(See Defs.' Mem. in Supp. of Mot. to Strike
[Doc. No. 438] at 11-14.) In contrast, Luminara argued that
the 2010 amendments to the Federal Rules of Civil Procedure
(“the 2010 amendments”)-which created the
distinction between reporting and non-reporting expert
witnesses-contemplated that the attorney-client privilege
would be waived only in limited circumstances not existing in
the present case. (See Pl.'s Mem in Opp. to Mot.
to Strike [Doc. No. 495] at 14-15.)
on the matter, Magistrate Judge Noel agreed with Defendants.
(See May 18 Order at 10-12.) Looking first to the
state of the law regarding expert testimony and waiver of
privilege prior to the 2010 amendments, the magistrate judge
noted that “courts generally held that all documents
and information disclosed to any testifying expert in
connection with his testimony, including any communications
with attorneys, were discoverable by the opposing
party.” (Id. at 10 (citing In re
Pioneer Hi-Bred Int'l, Inc., 238 F.3d 1370, 1375
(Fed. Cir. 2001); Johnson v. Gmeinder, 191 F.R.D.
638 (D. Kan. 2000)).)
Judge Noel then turned to consider whether the 2010
amendments had changed this rule. He first noted that while
Rule 26(b)(4)(C) provides explicit protection for some
communications between a party's attorney and reporting
experts,  it is silent as to whether communications
with a non-reporting expert are similarly protected. This
omission-according to the magistrate judge-was not
unintentional, however. (May 18 Order at 10-11.) Looking to
the advisory committee notes for the 2010 amendments, he
determined ultimately that they “did not change any
existing precedent regarding privilege waiver of
non-reporting experts that existed prior [to 2010].”
(Id. at 11.) Because there was no dispute between
the parties that prior to 2010 all documents and information
considered by a testifying expert were subject to discovery,
Magistrate Judge Noel concluded that “any documents and
information considered by . . . Patton in connection with his
expert testimony, including communications with attorneys are